No. 92062201 (T.T.A.B. Jul. 21, 2017)

People United for Christ, Inc.v.People United for Christians, Inc.

Trademark Trial and Appeal BoardJul 21, 2017

No. 92062201 (T.T.A.B. Jul. 21, 2017)

This Opinion is Not a Precedent of the TTAB Mailed: July 21, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ People United for Christ, Inc. v. People United for Christians, Inc. _____ Cancellation No. 92062201 _____ Jay Raniga-Jewett and Brooke Asiatico of Asiatico & Associates PLLC, for Opposer, People United for Christ, Inc. Sonya Del Peral of Law Office of Sonya del Peral, for People United for Christians, Inc. _____ Before Lykos, Kuczma and Masiello, Administrative Trademark Judges. Opinion by Kuczma, Administrative Trademark Judge: People United for Christ, Inc. (“Petitioner”) filed a Petition to Cancel Registration Nos. 4625951and 46259521 for the mark: 1 Registration Nos. 4625951and 4625952 issued on October 21, 2014 claiming first use and use in commerce on June 1, 2014, based on applications filed on August 2, 2013. “The mark consists of the outline of a dove (in gray) holding an olive branch (in green) with a two-toned gold cross in front of the dove and the words ‘People United For Christians’, in black lettering Cancellation No. 92062201 - 2 - registered by People United for Christians, Inc. (“Respondent”) for: charitable services, namely, organizing and developing projects that aim to improve the lives of underprivileged and impoverished people in International Class 35 (Registration No. 4625951); and charitable fundraising services in International Class 36 (Registration No. 4625952). Petitioner alleges ownership of U.S. Trademark Registration No. 3978130 for the mark PEOPLE UNITED FOR CHRIST (in standard characters) for: Pre-recorded electronic and digital media featuring religious subject matter in International Class 9; Publications, namely, books, booklets, brochures, newsletters, pamphlets, and teaching materials in the fields of religious doctrine and Christian topics in International Class 16; Educational and entertainment services, namely, a continuing program about religious doctrine and Christian topics accessible by radio, television, satellite, audio, video and computer networks in International class 41; and Christian ministry services in International Class 45.2 Petitioner also claims use of its common law word and design mark shown below: and underlined in gold, centered over the images.” “The color(s) gray, green, black and gold are claimed as a feature of the mark.” 2 Registration No. 3978130 issued on June 14, 2011; Section 8 declaration accepted. Cancellation No. 92062201 - 3 - on a continuous basis since as early as January 9, 1987. Petitioner petitions to cancel Respondent’s registrations under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on its alleged priority of use and likelihood of confusion between its pleaded marks and Respondent’s mark. Respondent denies the salient allegations of the Petition to Cancel and asserts several Affirmative Defenses which were not pursued. The Affirmative Defenses are therefore waived. Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc., 107 USPQ2d 1750, 1753 (TTAB 2013), aff’d, 565 Fed. App’x 900 (Fed. Cir. 2014) (mem.); Trademark Board Manual of Procedure (“TBMP”) § 801.01 (June 2017). I. The Record The record includes the pleadings and, by operation of Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1), the file histories for Respondent’s Registration Nos. 4625951 and 4625952 which are the subject of this proceeding. The record also includes the following evidence: Petitioner’s Evidence Petitioner filed a Notice of Reliance on thirteen documentary exhibits. For the reasons discussed below, Exhibit Nos. 1, 11, and 12 are excluded. The following evidence submitted with the Notice of Reliance is properly of record (12 TTABVUE):3 3 Record citations are to TTABVUE, the Board’s publically available docket history system. For material or testimony that has been designated confidential and which does not appear in the publically available TTABVUE, the TTABVUE docket entry number where such material or testimony is located is included. See Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). Cancellation No. 92062201 - 4 - Exhibit 2: Articles of Incorporation of People United for Christians, Inc. filed May 21, 2013 in the State of California, certified April 2, 2014 (12 TTABVUE 7-11). Exhibit 3: Statement of Information of People United for Christians, Inc. filed July 24, 2013 in the State of California, certified April 2, 2014 (12 TTABVUE 12-14). Exhibit 4: Articles of Incorporation for Messengers For Christ World Healing Center in the State of Nevada filed October 26, 2011, certified August 15, 2016 (12 TTABVUE 15-17). Exhibit 5: Certificate of Existence With Status of Revocation for Messengers For Christ World Healing Center in the State of Nevada dated August 15, 2016 (12 TTABVUE 18-19). Exhibit 6: Statement and Designation by Foreign Corporation for Messengers For Christ World Healing Center in the State of California dated August 14, 2012 with a Certificate of Existence form the State of Nevada dated August 13, 2012, certified August 17, 2016 (12 TTABVUE 20-23). Exhibit 7: Certificate of Status of Messengers For Christ World Healing Center in the State of California dated August 17, 2016 (TTABVUE 24-25). Exhibit 8: Articles of Incorporation of PPM Ministries Ltd. in State of California May 21, 2013, signed by Jason, certified August 16, 2016 (12 TTABVUE 26-31). Exhibit 9: Statement of Use filed in Respondent’s Application Serial No. 86027290, (12 TTABVUE 32-38). Exhibit 10: Statement of Use filed in Respondent’s Application Serial No. 86027323 (12 TTABVUE 39-45). Exhibit 13: Respondent’s website at http://people unitedforchristians.org/about.php (12 TTABVUE 59-67)); in Petitioner’s Notice of Reliance, counsel for Petitioner stated that the website was “last accessed on September 9, 2016 at 4:30pm, at URL: http://peopleunitedfor christians.org/about.php” (12 TTABVUE 3). Cancellation No. 92062201 - 5 - As noted, Exhibit Nos. 1, 11 and 12 are excluded from the evidentiary record. Exhibit No. 1 is a copy of the registration certificate for Registration No. 3978130 (for the mark PEOPLE UNITED FOR CHRIST (12 TTABVUE 5-6)). It does not show the current status and title of the registration;4 accordingly, it is not admissible for purposes of proving the status and title of the registration. 37 C.F.R. § 2.122(d)(2) (Jan. 2016); see also TBMP § 704.03(b)(1)(A) (June 2016).5 Petitioner’s Exhibit Nos. 11 and 12 are copies of Orders under the Companies Act 2006, apparently issued by a foreign tribunal, in the matter of application No. 575 O- 138-14 dated March 26, 2014 (12 TTABVUE 46-54) and application No. 1157 O-373- 16 dated August 4, 2016 (12 TTABVUE 55-58).6 The copies of the Orders set forth in Exhibit Nos. 11 and 12 are not authenticated and are therefore excluded. 37 C.F.R. § 2.122(e), Fed. Rule of Evid. 902.7 Petitioner also submitted the Affidavit of Nickolas Popoff in Support of Petition to Cancel with accompanying Exhibits (14 TTABVUE). Inasmuch as Respondent did not 4 Although Petitioner’s Notice of Reliance represents that the copy of the Registration filed “show[s] both the current status and current title to the registration[ ],” the current status and title of the Registration is not indicated. 5 The Rules of Practice in effect on January 2016 and the June 2016 edition of the Trademark Trial and Appeal Board Manual of Procedure were in force during the time of Petitioner’s Trial Period which closed on September 13, 2016. 6 The origin of the Orders in Exhibits 11 and 12 is not identified on the documents submitted. However, the documents indicate that an appeal of the Orders is to the High Court in England, Wales and Northern Ireland and to the Court of Session in Scotland. 7 The Orders do not meet the requirements of Fed. R. Evid. 902(3) or (4) for self- authenticating evidence. Additionally, 37 C.F.R. § 2.122(e) states: “The notice of reliance shall specify … the official record and the pages to be read; and be accompanied by the official record or a copy thereof whose authenticity is established under the Federal Rules of Evidence, or by the printed publication or a copy of the relevant portion thereof.” Cancellation No. 92062201 - 6 - consent to the submission of testimony by affidavit, the Popoff Affidavit is not admissible. Under the rules applicable at the time of trial, testimony by affidavit was not permissible unless stipulated to by the parties.8 While the Popoff Affidavit is excluded in the absence of a stipulation, certain evidence submitted with the Affidavit would have been admissible if offered by notice of reliance; therefore, we admit the following: Exhibit A: Petitioner’s Articles of Incorporation of People United for Christ Inc., Endorsed and certified January 9, 1987 (14 TTABVUE 11-14). Exhibit K: Final Judgment of Petitioner against Kelly Media Group, Inc. dated December 13, 2012, certified July 10, 2013 (14 TTABVUE 291-295). Exhibit N: Decision of the Company Names Tribunal: Peter Popoff Ministries UK Limited and Order O-138-14 Under the Companies Act 2006 by The Company Names Tribunal dated March 26, 2014 in the matter of application No. 575 by Rev. George Popoff, People United for Christ, Inc. and Word for the World Ministries UK Limited for a change of company name of registration No. 08457122 (14 TTABVUE 324-334, Company Names Tribunal decision: Peter Popoff Ministries UK Limited-Publications-GOV.UK printed 5/25/2016 from https://www.gov.uk/government/publica tions/company-names-tribunal-decision-peter-popoff-mini steries-uk-limited).9 8 When the Affidavit of Nickolas Popoff in Support of Petition to Cancel (14 TTABVUE) was submitted on September 13, 2016, testimony could be submitted to the Board by a testimonial deposition upon oral examination, upon written questions, or upon stipulation between the parties. 37 C.F.R. § 2.123(a)(1) and (b), 37 C.F.R. § 2.124(b)(1) (Jan. 2016). Effective January 14, 2017, well after the deadline for the submission of testimony in this case, the Rules were amended to allow testimony to be submitted via affidavit or declaration if filed during the proffering party’s testimony period. 37 C.F.R. § 2.123. See TBMP § 703.01(a) and (b). 9 See Safer Inc. v. OMS Investments Inc., 94 USPQ2d 1031, 1039 (TTAB 2010). In lieu of the actual “official record or a copy thereof,” the notice of reliance may be accompanied by an electronically generated document (or a copy thereof) which is the equivalent of the official Cancellation No. 92062201 - 7 - The rest of the Exhibits submitted with the Popoff Affidavit are inadmissible for the reasons set forth below: Exhibit B is a copy of Petitioner’s Certificate of Trademark Registration No. 3978130 (14 TTABVUE 15-16). Because it does not set forth the current status and title of the registration, it is inadmissible for the same reason that Petitioner’s Exhibit No. 1 is inadmissible (see above). The exclusion of the Popoff Affidavit renders the following Exhibits inadmissible due to lack of identification and authentication. Fed. Rule of Evid. 901: Exhibit C: Sampling of Petitioner’s Use of its Marks (14 TTABVUE 17-68). Exhibit D: Sample of Petitioner’s Letter to its Ministry Partners Filed Under Seal as “Confidential” pursuant to TTAB Standard Protective Order (13 TTABVUE 69-84, 14 TTABVUE 69). Exhibit E Sampling of Registrant’s Correspondence (or extracts thereof) to Petitioner’s Ministry Partners (14 TTABVUE 70-168). Exhibit F: List of Petitioner’s Ministry Partners who have complained/inquired about whether Petitioner and Registrant are related or the same entity (14 TTABVUE 169-260). Exhibit G: Sampling of Complaints and Inquiries Received by Petitioner from its Ministry Partners (14 TTABVUE 261-285). Exhibit H: Petitioner’s Contract with Kelly Media Group Inc. Filed under Seal as “Confidential” pursuant to TTAB Standard Protective Order (13 TTABVUE 301-330, 14 TTABVUE 286). Exhibit I: Extracts of Petitioner’s Board Meeting Minutes Filed under Seal as “Confidential” pursuant to TTAB record, and whose authenticity is established under the Federal Rules of Evidence. TBMP § 704.07. Cf. TBMP § 704.08. (Jan. 2016). Cancellation No. 92062201 - 8 - Standard Protective Order (13 TTABVUE 331-354, 14 TTABVUE 287). Exhibit J: Termination of Petitioner’s Contract With Kelly Media Group, Inc. (14 TTABVUE 288-290). Exhibit L: Sampling of Letter from Messengers for Christ World Healing Center to PUFC Ministry Partners (14 TTABVUE 296-311). Exhibit M: Sampling of Letter from PPM Ministries Ltd to PUFC Ministry Partners (14 TTABVUE 312-323). Lastly, Petitioner’s Exhibit O: Copy of Order O-373-16 issued Under the Companies Act 2006 In the matter of application No. 1157 by People United for Christ, Inc. For a change of company name of registration No. 09679342 dated August 4, 2016 (14 TTABVUE 335-338), is identical to Petitioner’s Exhibit No. 12, and is excluded on the same grounds, i.e., it is not authenticated. 37 C.F.R. § 2.122(e), Fed. Rule of Evid. 902. Respondent’s Evidence Respondent did not submit any evidence or testimony, nor did it submit a trial brief. II. Standing Standing is a threshold issue that must be proven by the plaintiff in every inter partes case. Our primary reviewing court, the U.S. Court of Appeals for the Federal Circuit, has enunciated a liberal threshold for determining standing, namely that a plaintiff must demonstrate that it possesses a “real interest” in a proceeding beyond that of a mere intermeddler, and “a reasonable basis for his belief of damage.” Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, Cancellation No. 92062201 - 9 - 1062 (Fed. Cir. 2014); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). A “real interest” is a “direct and personal stake” in the outcome of the proceeding. Ritchie v. Simpson, 50 USPQ2d at 1026. A belief in likely damage can be shown by establishing a direct commercial interest. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000). Petitioner’s standing to oppose registration of Respondent’s mark is established by its Articles of Incorporation filed in the State of California which indicate that Petitioner, People United for Christ, Inc., is a religious corporation organized under the Nonprofit Religious Corporation Law with the specific purpose of the corporation being to disseminate, teach and preach the Gospel and teachings of Jesus Christ through the means of mass evangelism conducted in meetings, churches, and through the media of television and radio.10 Thus, Petitioner has standing due to its commercial interest in its corporate name People United for Christ, Inc. which begins with the identical first three words as Respondent’s mark PEOPLE UNITED FOR CHRISTIANS, and also contains the word “Christ” which is similar or related to the word “Christians.” III. Priority and Likelihood of Confusion For Petitioner to prevail on its § 2(d) claim in this proceeding it must first show that it made prior use of the marks PEOPLE UNITED FOR CHRIST and/or 10 Petitioner’s Exhibit “A” (14 TTABVUE 11-14). Cancellation No. 92062201 - 10 - before the date on which Respondent is entitled to rely for its registered mark PEOPLE UNITED FOR CHRISTIANS & Design. As plaintiff in this proceeding, it is Petitioner’s burden to establish prior use by a preponderance of the evidence. See, e.g., Metro Traffic Control, Inc. v. Shadow Network Inc., 104 F.3d 336, 41 USPQ2d 1369, 1372 (Fed. Cir. 1997). Under Section 7 of the Trademark Act, Respondent is entitled to rely upon the filing date of the applications underlying its Registrations for purposes of establishing a date of first use of its registered mark . 15 U.S.C. § 1057(c). Cent. Garden & Pet Co. v. Doskocil Mfg. Co., 108 USPQ2d 1134, 1140 (TTAB 2013); Larami Corp. v. Talk to Me Programs, Inc., 36 USPQ2d 1840, 1844 (TTAB 1995) (parties may rely on the constructive use (filing) dates for purposes of priority). Thus, Petitioner must prove that it has a proprietary interest in the marks PEOPLE UNITED FOR CHRIST or that it obtained prior to the August 2, 2013 constructive use date (i.e., filing date) of the applications underlying Registrant’s Registrations for PEOPLE UNITED FOR CHRISTIANS & Design. See Herbko Int’l Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002); Otto Roth & Co., Inc. v. Universal Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981); L. & J.G. Stickley Inc. v. Cosser, 81 USPQ2d 1956, 1966 (TTAB 2007). Looking at the admissible evidence, there is no proof of Petitioner’s use of the marks PEOPLE UNITED FOR CHRIST or . Additionally, Petitioner has not Cancellation No. 92062201 - 11 - proven that it is the current owner of its pleaded registration and that the pleaded registration still subsists; Petitioner therefore is unable to rely on the filing date of the application underlying its pleaded Registration for PEOPLE UNITED FOR CHRIST as a constructive use date for purposes of priority. See Brewski Beer Co. v. Brewski Bros. Inc., 47 USPQ2d 1281, 1284 (TTAB 1998). Inasmuch as Petitioner has failed to prove any common law rights in its pleaded marks or that it currently owns the pleaded registration for the mark PEOPLE UNITED FOR CHRIST which is valid and subsisting, Petitioner cannot prove priority of use, and has failed to demonstrate that it is entitled to any relief under its asserted § 2(d) claim. Sterling Jewelers Inc. v. Romance & Co., 110 USPQ2d 1598, 1602 (TTAB 2014). Decision: The Petition for Cancellation of Registration Nos. 4625951and 4625952 is dismissed.